Derek brings more than 20 years of experience to his work in patent prosecution, portfolio management, intellectual property due diligence, and technology transfer and licensing matters.
His strong track record of successful outcomes, coupled with his technical training as an electrical engineer, give Derek a unique perspective on the challenges facing in-house legal departments and technological innovators in a broad range of industries.
Clients turn to Derek for tactical guidance in the following areas:
- Protecting software, computer, and electrical technologies by securing patent, copyright, and other IP property protection
- Growing and managing large patent portfolios
- Obtaining strategic patent coverage
- Negotiating intellectual property licenses and non-disclosure agreements
- Due diligence, product clearance, and litigation avoidance and support
Chambers USA has twice recognized Derek’s work in intellectual property law. He regularly speaks and writes on topics ranging from online privacy policies to software patents.
Recognizing that the needs of our clients are not limited to one state, Derek travels to clients in various locations throughout the Midwest, including Wisconsin and Illinois.
Derek’s representative experience includes:
- Managing patent preparation and global prosecution for Fortune 500 and multi-national companies for a variety of software, computer, and electrical technologies.
- Preparing, analyzing and negotiating hundreds of software and other IP licenses and agreements.
- He has specific experience with information technology (IT) and database systems; browser-wrap and click-wrap contracts; hosting services; SaaS and web services; cloud computing; open source licensing; source code and technology escrows, privacy policies and data security.
Representative technologies include:
- Virtual and augmented reality
- Artificial intelligence applied to virtual assistants and autonomous and semi-autonomous vehicle systems
- Wireless communications systems and devices, including LTE and LMR technologies
- Productivity software
- 3D computed tomography, surface scanning, and other medical imaging systems and software
- Vehicle electronics, vehicle control systems and software, vehicle-to-vehicle and vehicle-to-infrastructure communications
- Medical devices and systems including ophthalmic surgical devices
- MEMS technologies
- Magnetic and ultrasonic sensing technologies
- Building security and monitoring systems
- Electric power technologies such as generators, switchgear, and solar electric systems
Prior to joining Michael Best, Derek worked as a law clerk for the Office of Unfair Import Investigations for the U.S. International Trade Commission. He also has served as an engineering technician for the U.S. Army Armament, Munitions and Chemical Command.
Honors & Recognitions
- The Best Lawyers in America©, Patent Law, 2021-present
- The Midwest’s Best Lawyers©, Patent Law, 2021
- Leading Intellectual Property lawyer, Chambers USA, 2012 and 2013
- Member, American Intellectual Property Law Association (AIPLA)
- Member, International Association of Privacy Professionals (IAPP)
- Member, The Institute of Electrical and Electronics Engineers (IEEE)
- Member, Licensing Executives Society (LES)
- Secretary, Mobile and Consumer Electronics Committee, 2017-present